The Complainant is Amundi Asset Management, France, represented by Nameshield, France.
The Respondent is 袁炳 (Yuan Bing), China.
The disputed domain names <amundiboc.com>, <amundibocwm.com>, <boc-amundi.com>, <bocamundi.com> are registered with Alibaba Cloud Computing (Beijing) Co., Ltd. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2020. On January 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 8, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 8, 2020 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 8, 2020.
On January 8, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding on January 8, 2020. The Respondent requested that Chinese be the language of the proceeding on January 9, 2020.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 6, 2020. The Respondent sent an email to the Center regarding the language of proceeding and settlement with the Complainant on January 17, 2020. On February 7, 2020, the Center informed the Parties that it would proceed to appoint a panel.
The Center appointed Joseph Simone as the sole panelist in this matter on February 18, 2020. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
Based in France, the Complainant is the largest asset management company in Europe. It has offices in 37 countries in Europe, Asia-Pacific, the Middle East and the Americas. It has EUR 1,425 billion in assets under management and over 100 million retail, institutional and corporate clients.
The Complainant owns International trademark no. 1024160 for AMUNDI, registered on September 24, 2009. The Complainant also owns domain name <amundi.com>, which the Complainant registered on August 26, 2004 and has used since.
The disputed domain names were all registered on December 20, 2019 and currently resolve to inactive websites.
The Complainant submits the following arguments to establish the three elements required for transfer of the disputed domain names.
1. The disputed domain names are identical or confusingly similar to the Complainant’s trademark AMUNDI. The addition of “Boc” and “Bocwm” can be understood as abbreviations for “Bank of China” and “Bank of China Wealth Management” respectively. This is not sufficient to avoid a finding that the disputed domain names are confusingly similar to the trademark AMUNDI. On the contrary, the addition of the abbreviations increases the likelihood of confusion with the Complainant, as it may be deemed as referring to a new joint venture between the Complainant and Bank of China Wealth Management, a subsidiary of the Bank of China.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not known by any of the disputed domain names. The Respondent is also not affiliated with or authorized by the Complainant in any way. The Complainant has not granted the Respondent any license or authorization to use the trademark AMUNDI. The disputed domain names have been inactive since their registration, which demonstrates that the Respondent has no demonstrable plans to use, and lacks legitimate interest in, the disputed domain names.
3. The disputed domain names were registered and are being used in bad faith. The disputed domain names are confusingly similar to the Complainant’s trademark AMUNDI, which is used worldwide and carries certain fame confirmed by previous UDRP panels. The disputed domain names could not have been be registered coincidentally, as they associate the trademark AMUNDI with the abbreviation “Boc” or “Bocwm” in reference to a new asset management joint venture between the Complainant and Bank of China Wealth Management. Therefore, the Respondent has registered the disputed domain names with full knowledge of the Complainant’s trademark. Further, as the disputed domain names are currently inactive, and it is not possible to conceive of any plausible (actual or contemplated) active use of the disputed domain names by the Respondent that would not be illegitimate.
Except for the email sent by the Respondent requesting that the language of the proceeding be Chinese and the email regarding settlement with the Complainant dated January 9, and January 17, 2020, respectively, the Respondent did not reply to the Complainant’s contentions.
In accordance with paragraph 11 of the Rules:
“…the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
In this case, the language of the Registration Agreement is in Chinese. However, the Complainant filed the Complaint in English and requested that English be the language of the proceeding, on the following grounds:
- English is the most widely used language in international relations;
- The disputed domain names are formed by Roman characters (ASCII), suggesting that the Respondent understands English;
- The disputed domain names are confusingly similar to the Complainant’s trademark;
- To proceed in Chinese, the Complainant would have to retain specialized translation services at a cost very likely to be higher than the overall cost of the proceedings.
The Respondent sent two emails to the Center requesting that the Complaint be translated into Chinese or the Respondent would be unable to understand the Complaint, resulting in unfairness.
The Panel has considered the circumstances of this case and will proceed in English for the following reasons.
The Respondent has been the respondent in five other UDRP cases in which the panel has ordered transfer of the domain names. In three of these cases, the Respondent similarly requested Chinese to be the language of the proceeding and in all cases, he failed to submit a formal defense, despite being fully aware of the nature of the proceedings and being given the opportunity to submit a response in Chinese. Even where the complaint was submitted in Chinese, the Respondent did not file a response.
This suggests that the Respondent’s request for Chinese language is merely intended to delay or obstruct the proceeding when he does not plan to file a response. It also indicates that the Respondent is knowingly and repeatedly registering domain names which are not his to own.
Given that the Respondent has also failed to submit a Response in this case, and the Respondent is found to have acted in bad faith, the Panel will not require the Complainant to translate the submissions and will proceed in English.
Under the first element of the Policy, the Complainant must prove that the disputed domain names are identical or confusingly similar to the trademarks in which the Complainant has rights (paragraph 4(a)(i) of the Policy).
The Complainant has submitted evidence of its trademark registration for AMUNDI, and it therefore possesses rights to the mark.
The disputed domain names are all composed of the Complainant’s trademark AMUNDI and the terms “Boc” or “Bocwm” before or after the mark. The placement of the terms in front and at the end of AMUNDI, and the addition of a hyphen separating the terms “boc” and “amundi” in one disputed domain name, all indicate that “amundi” is a distinct and separate term. None of the additional terms carry dictionary meaning, but are likely acronyms for all or part of “Bank of China Wealth Management”, as the Complainant contends. In any case, where a trademark is recognizable in the disputed domain name, the addition of descriptive or dictionary elements does not prevent a finding of confusing similarity under the first element (see, e.g. eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307).
Therefore, as the disputed domain names all contain AMUNDI in its entirety, they are all confusingly similar to the Complainant’s mark.
Under the second element, a complainant must demonstrate that the respondent should be deemed as having no rights or legitimate interests in respect of the disputed domain name (paragraph 4(a)(ii) of the Policy).
The Complainant submits it has no affiliation with the Respondent and has never authorized the Respondent to use its trademark. In these circumstances, and where the Complainant is a world-renowned company, the Respondent would have to present strong evidence justifying the incorporation of the Complainant’s trademark as a distinctive element in all of the disputed domain names. However, it is unlikely that the Respondent could demonstrate any interest in the disputed domain names that would not infringe upon the Complainant’s rights. This is due to the risk of implied affiliation with the Complainant, which is heightened because the Complainant’s trademark is accompanied by acronyms for Bank of China Wealth Management, with which it has entered into a joint venture.
Furthermore, all of the disputed domain names resolve to inactive websites, suggesting that the Respondent has no intention to use them and no interest in doing so. This is confirmed by the Respondent’s offer to sell the disputed domain names to the Complainant directed to the Center. The Panel infers that this is a classic case of cybersquatting.
As the Respondent has failed to present any evidence arguing otherwise, the Panel concludes that the Respondent has no rights or legitimate interests in the disputed domain names, and therefore, the second element is satisfied.
Under the final element of the Policy, a complainant must prove that a disputed domain name was registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
Here, the Complainant has established significant reputation and goodwill in the mark AMUNDI, which it uses as a trade and business name for its wealth management services. On December 20, 2019, the Complainant announced that it would enter into a joint venture with Bank of China Wealth Management, after receiving approval from China’s Banking and Insurance Regulatory Commission. It is surely no coincidence that on the same day, the Respondent registered the four disputed domain names containing the Complainant’s name and mark, alongside the acronyms “Boc” and “Bocwm”, which correspond to the initials of the Complainant’s new joint venture partner. Clearly, the Respondent deliberately targeted the Complainant when he registered the disputed domain names.
The Respondent’s bad faith is further confirmed by the fact that he has engaged in a pattern of registering domain names containing third party trademarks. The Respondent has been the respondent in at least five previous UDRP cases, all involving well-known trademarks of third parties, and all resulting in findings of bad faith.
- Klarna Bank AB v. Yuan Bing, WIPO Case No. D2017-2476 (<klarnabank.biz>; <klarnabank.info>; <klarnabank.mobi>; <klarnabank.online>; <klarnabank.site>)
- BASF SE v. Yuan Bing, WIPO Case No. D2016-2344 (<synvina.com>)
- Dekra e.V. v. Yuan Bing, WIPO Case No. D2015-1081 (<dekraist.com>)
- Audi AG v. yuan bing, WIPO Case No. D2017-0457 (<saic-audi.com>)
- 腾讯控股有限公司(Tencent Holdings Limited) 诉 Yuan Bing, WIPO Case No. D2018-1965 (<nintendotencent.com>)
The above abusive domain name registrations are sufficient to establish a pattern of conduct, which the Respondent continues in the current case. By registering four domain names containing different combinations of the Complainant’s mark and acronyms for its joint venture partner, the Respondent clearly has prevented the Complainant from registering those domain names. This constitutes bad faith under paragraph 4(b)(ii) of the Policy.
Finally, the Respondent has demonstrated no use of the disputed domain names. It is well established that passive holding of a domain name can constitute bad faith, when the overall circumstances point to this conclusion (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003). Those circumstances, which have been outlined above, are present in the current case. They are reinforced by the Respondent’s offer to sell the disputed domain names during communications with the Center, a final attempt to extract a profit from his wrongful registration of the disputed domain names.
Therefore, the Panel finds that the Respondent registered and used the disputed domain names in bad faith, and the final element for transfer is satisfied.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <amundiboc.com>, <amundibocwm.com>, <boc-amundi.com>, and <bocamundi.com>, be transferred to the Complainant.
Joseph Simone
Sole Panelist
Date: March 2, 2020